USPTO Patents Application 09652540

October 15. 2007

Date of Deposit

Our Case No. 8285/389

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re Application of:

Carol Gruchala

Serial No.: 09/652,540

Filing Date: August 31 . 2000

For: METHOD, SYSTEM AND

ARTICLE FOR PROVIDING A
FAMILY TELECOMMUNICATION
SERVICE USING AN
ORIGINATING DUAL-TONE
MULTI-FREQUENCY TRIGGER

Examiner: Nguyen, Quynh H.
Group Art Unit No.: 2614

REPLY BRIEF

Mail Stop Appeal Brief - Patents
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

Applicants submit this Replay Brief in response to the Examiner's Answe^mailed
Aug. 27, 2007. I

10/17/a007 HABDELRl 00000046 09652540

01 FC:1402 510.00 Dfl

I, status of Claims

Claims 1-17 are pending, stand rejected, and are the subject of this appeal.

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II. Grounds of Rejections to Be Reviewed on Appeal

1. Claims 1-17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over U.S. Pat. No. 6,879,676 ("Contractor") in view of U.S. Pat. No.
5,953,401 ("Caveney").

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VIL Argument

A. It Is Improper to Combine Contractor and Caveney

As explained in Applicant's Appeal Brief, because the portion of Contractor cited
by the Examiner discloses providing a routing menu to a caller, which is the very action
that Caveney is attempting to avoid, it is improper to combine Contractor and Caveney.
The Examiner asserts that the fact Contractor and Caveney teach away from their
combination is "totally irrelevant" because Caveney is only being cited for an originating
dual-tone multi-frequency (DTMF) trigger in a telephone call. (See Examiner's Answer,
page 6-7). Applicants respectfully disagree. MPEP § 2145 states "[i]t is improper to
combine references when the references teach away from their combination." There is
no mention of determining whether specific portions of a reference teach away from
their combination and ignoring the remainder of the reference. Applicants maintain that
because Caveney teaches away from a user receiving a generated voice message
such as a menu, and the portion of Caveney cited by the Examiner discloses a user
receiving a generated voice message such as a menu, it is improper to combine
Contractor and Caveney as contemplated by the Examiner.

B. Rejection of the Independent Claims As Being Unpatentable Over
Contractor in View of Cavenev

Each of the independent claims recites providing a menu to a caller from a
telephone network element in a telephone call, the menu providing a plurality of
destination options including a first destination option for a residence of a family, a
second destination option for a first member of the family at a first location other than
the residence, and a third destination option for a second member of the family at a
second location other than the residence. The Examiner has admitted that Caveney
does not teach providing a menu to a caller. (See Office Action dated Dec. 1, 2005,
page 6). The only reference cited by the Examiner that provides a menu to a caller is
Contractor. However, Contractor fails to teach the above-recited element.

The Examiner asserts that a legal relationship between car dealers meets the
elements of a family and family member. Applicants respectfully disagree. For
example, the independent claims recite a first destination option for a residence of a
family. One would not consider a location of a car dealership, or a location of a group

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of car dealerships, to be a residence of a family. Interpreting a residence of a family to
be a location of a car dealership or a location of a group of car dealerships conflicts with
both the definition of a family as defined in the specification and the plain meaning of
the word family.

Further, the Examiner asserts that "[a] list of destinations is a list of destinations."
(See Examiner's Answer, page 8). Applicants respectfully disagree and submit that the
Examiner is not giving proper weight to the actual language of the claims. Each of the
independent claims recites specific destination options that are provided in a menu
such as an option for a family residence and an option for a family member at a location
other than the family residence. Properly interpreted, Contractor fails to teach these
elements.

Because both Contractor and Caveney fail to disclose at least providing a menu
to a caller from a telephone network element in a telephone call, the menu providing a
plurality of destination options including a first destination option for a residence of a
family, a second destination option for a first member of the family at a first location
other than the residence, and a third destination option for a second member of the
family at a second location other than the residence, and because it is improper to
combine Contract or and Caveney, Applicants maintain that that the proposed
combinations of Contractor and Caveney as contemplated by the Examienr necessarily
does not render independent claims 1, 5, 9, or any claim that depends on claims 1, 5,
and 9, unpatentable.

C, Rejection of Dependent Claims 4, 8, and 12 As Being Unpatentable
Over Contractor In View of Caveney

In addition to the reasons set forth above with respect to independent claims 1 ,
5, and 9, dependent claims 4, 8, and 12 provide additional grounds for patentability.
Dependent claims 4, 8, and 12 recite that at least a portion of a menu is provided in a
telephone call after detecting an originating dual-tone multi-frequency trigger, or in
response to detecting an originating dual-tone multi-frequency trigger. The Examiner
has admitted that Caveney does not teach providing a menu to a caller. (See Office
Action dated Dec. 1, 2005, page 6). The only reference cited by the Examiner that
provides a menu to a caller is Contractor. However, the Examiner has also admitted

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that Contractor fails teach detecting an originating dual-tone multi-frequency trigger in a
telephone call. (See Office Action dated Nov. 14, 2006, page 3). Thus, both Contract
and Caveney fail to teach providing a portion of a menu based on detecting an
originating dual-tone multi-frequency trigger.

Because Contractor and Caveney fail to teach providing at least a portion of a
menu in a telephone call after detecting an originating dual-tone multi-frequency trigger,
or in response to detecting an originating dual-tone multi-frequency trigger, the
proposed combination of Contractor and Caveney necessarily do not render dependent
claims 4, 8, and 12 unpatentable.

Respectfully submitted,

■SceffW. Brim
Reg. No. 51,500
Attorney for Applicants

BRINKS HOFER GILSON & LIONE
P.O. Box 10395
Chicago, Illinois 60610
(312) 321-4719

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U.S.P.S. EXPRESS MAIL "POST OFFICE TO ADDRESSEE" SERVICE
DEPOSIT INFORMATION

Express Mail Label No.: EV9642850Q0US
Date of Deposit: October 15. 2007

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BRINKS
H 0 F E R
G I L SO N
&LIONE

n re Appln. of: Carol Gruchala
Appln. No.: 09/652,540

Filed:
For:

August 31, 2000

Method, System and Article for Providing a
Family Telecommunication Service Using an
Originating Dual-Tone Multi-Frequency Trigger

Attorney Docket No: 8285-389

Examiner: Nguyen, Quynh H.
Art Unit: 2614

Mail Stop Appeal Brief - Patents
Commissioner for Patents
P. O. Box 1450
Alexandria, VA 22313-1450

TRANSMITTAL

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Respectfully submitted,

October 1 5, 2007

Date

Brim (Reg. No. 51,500)

BRINKS HOFER GILSON & LIONE
NBC Tower - Suite 3600, 455 N. Cityfront Plaza Drive, Chicago, IL 6061 1-5599